What’s in a name? A lot, especially when it comes to domain names. Many website owners desire for their trademark or service mark to be incorporated into the domain name and/or generic keywords designed to capture web traffic. Problems exist when owners fail to do due diligence whether there is already a conflicting mark in a related product or service, or incorrectly assume that certain domain name choices are generic.
Knowing and understanding the difference between generic words and those eligible to be registered is important, to avoid future legal problems, such as domain name arbitration.
How Trademarks Work With Domains
A domain name is part of the Internet address, or URL, of your website. It’s a common misconception that registering a domain name gives you trademark rights. It doesn’t. The reason is that merely registering the domain does not qualify as “use in commerce,” which is the key to establishing trademark rights. This issue is also important because registering a domain that incorporates trademarked words by itself, does not constitute trademark infringement because there’s no use in commerce. But tread carefully because use in commerce in passive activities such as domain name parking to capture website traffic to generate advertising revenue.
Another misconception is that operating a website under a particular domain name establishes trademark rights. It’s not as much use in commerce, but whether the domain name is being used to function as a trademark. It’s all context. One of the first things that the United States Patent and Trademark Office will look for is whether the applied for mark is being used in close proximity to the goods or services offered. If not, the presumption is that consumers will not associate the good or service with the source. If use is limited to what appears in the URL bar, this will be inadequate.
A common question is whether the entire domain name should be registered, specifically, the .com extension. It depends on how you are using it. Most times this will be no. If part of the mark, how you are using it on the website, through other advertising and marketing channels, and on product labeling include the .com, then it likely is part of the trademark. For a successful application the applied for mark needs to be consistent with how it is being used in commerce.
If there are uncertainties and questions, a trademark attorney can help identify and determine risks in registering domains and during the trademark application process.
How Domain Disputes Are Resolved
One of the leading causes of Internet litigation is domain disputes. These occur from a lack of knowing and assumptions whether a term can be protected with a trademark, or whether the domain name consists of unprotectable generic words or it infringes upon another’s trademark.
There are two primary areas where domain name disputes occur. The first is through an Anticybersquatting claim litigated in federal court. Often these claims are brought in conjunction with trademark infringement or unfair competition claims. Anticybersquatting claims can be precarious for a defendant because a successful plaintiff can recover statutory damages up to $100,000 and attorneys’ fees. Under trademark infringement and unfair competition claims, plaintiffs are limited to actual damages and attorneys’ fees are only awarded in “exceptional cases,” which is rare. One can imagine that the exposure stacks up quite significantly when Anticybersquatting claims are in play.
The second area is through UDRP arbitration. When you register a domain, the agreement that is signed with a registrar includes a provision that you agree to have domain disputes decided through UDRP arbitration. Most domain disputes are decided through UDRP arbitration because legal fees and costs are significantly less and the dispute is decided by the arbitration panel much quicker than full-blown federal litigation.
Protect Your Online Presence and Business
Hiring a knowledgeable nad experienced trademark attorney like Paul Ticen can help any online business owner navigate what is becoming a more complex and treacherous business environment. The Internet has enabled businesses to expand their footprint in ways that were prevously imaginable, but has created a host of other problems. And the laws governing areas like trademark and unfair competition are miles behind the Internet disputes and domain name that directly affect trademark rights.
Whatever the trademark issue may be, simply contact Attorney Paul Ticen. His expertise will make the difference in protecting your onlien presence and business for your products or services.